Patent Prosecution Highway in Canada has been a successful way for applicants to advance patent prosecution and receive higher acceptance rate at the Canadian Intellectual Property Office (CIPO).

Apart from its participation in the Global Patent Prosecution Highway (GPPH), which uses equal set of qualifying requirements to all its member countries, CIPO runs bilateral PPH pilot programs with EPO, IMPI (Mexico), INAPI (Chile), SIPO (China) and Taiwan.

When submitting a PPH request to CIPO the following requirements must be met:

• the corresponding applications must share the earliest priority;
• claims of the Canadian application must sufficiently correspond to the claims identified as patentable by the Office of Earlier Examination (OEE) by having the same or similar (narrower) scope of protection;
• at least one of the corresponding applications must have one or more claims determined patentable/allowable;
• substantive examination on the Canadian application has not yet begun.

Substantive examination is considered to have begun when CIPO issues a first office action. However, this could occur at any time after the request for examination had been submitted. Therefore, applicants wishing to request accelerated examination under the PPH program should proceed with the PPH request without any delay after receiving an indication from the OEE that one or more claims are allowable.

At the same time, CIPO may still choose to allow GPPH requests filed after examination of the application has begun in Canada. The decision of the CIPO to allow such request is made on case-to-case basis which depends on the particular circumstances.

The latest work product, which indicates the claims to be patentable/allowable, must be submitted together with its translation, if not available in English or French. Where translation is required machine translations are acceptable, but if a machine translation is of a poor quality, a further translation may be requested. When machine translations of supporting documentation are provided, CIPO will assess supporting documentation to the maximum extent possible.

A PPH application undergoes regular examination being processed in the same manner as any application undergoing national prosecution. Despite that, if all requirements for accelerated examination are met, patent prosecution of a PPH application runs considerably faster and at no additional charge to regular fees. On average, CIPO issues a first office report for a PPH application approximately 3 months after the PPH request has been made.  

PPH program works extremely well in Canada for applicants who already have a US patent application. For CIPO, where the USPTO is the Office of Earlier Examination (OEE), a national application may claim priority of either: a provisional patent application, a non-provisional utility patent application, a continuation patent application, a continuation-in-part patent application, or a divisional patent application.

Other measures for expediting examination of a patent application in Canada include the use of Special Orders for expedited examination upon payment of an official fee or in connection with patent applications relating to green technology.